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The EPO's undisclosed disclaimers trap—a possible way out

In its decision G 1/03, the jurisdiction of the European Patent Office ("EPO"), in particular the Enlarged Board of Appeal, has developed a possibility to disclaim novelty-destroying subject matter disclosed in prior art under Article 54(3) EPC, i.e., prior art filed before, but published after, the filing date of an application in question.

According to G 1/03, such "a disclaimer should not remove more than is necessary to restore novelty" as "the necessity for a disclaimer is not an opportunity for the applicant to reshape his claims arbitrarily" (G 1/03, reasons point 3). In view of this requirement, it is necessary to formulate a disclaimer that does not deviate in scope from the subject matter anticipated. This is generally achieved by using the same wording used in the prior art under Article 54(3) EPC.

In the same decision, the Board also held that a claim containing a disclaimer must meet the requirements of clarity and conciseness of Article 84 EPC, which is a formal requirement for the claims only.

Situations may now arise where there is a need for excluding novelty-destroying subject matter disclosed in prior art under Article 54(3) EPC and where the wording used in the prior art does not conform with the requirements under Article 84 EPC. Under these circumstances, the applicant may find himself in an inescapable trap where an unclear wording of the prior art to be disclaimed deprives the applicant of the possibility to draft an admissible disclaimer in order to restore novelty of the claimed subject matter.

The Board of Appeal 3.3.07 has now confirmed, in its decision T 2130/11, that formulating an allowable undisclosed disclaimer cannot justify an exception in the application of Article 84 EPC. Accordingly, it has been clarified that Article 84 EPC applies to the wording of undisclosed disclaimers in the same way as for any other feature of a patent claim.

This decision is based on a case in which the disclaimer was to be formulated by literal reproduction of the wording of the novelty-destroying examples disclosed in an Article 54(3) EPC document. These examples included references to other patents and to trademark designations for certain substances and, hence, were in disagreement with the requirements of Article 84 EPC.

It is readily apparent that such inescapable trap, based on events outside the applicant's influence, would be dissatisfying and potentially contradict the intention of the Enlarged Board of Appeal in G 1/03. Fortunately, in the same decision T 2130/11, the Board has formulated a possible escape route for applicants facing the situation described above.

In order to show applicants a way to avoid the inescapable trap mentioned above, the Board interpreted the statement of G 1/03 under point 3 of the reasons, third paragraph, that "Article 84 EPC may require that the terminology [of the anticipation] be adapted in order to exclude what is necessary to restore novelty" in such a way that deviations from prior art wording be permissible if they serve to avoid lack of clarity. In other words, a deviation from the original wording leading to "a disclaimer removing more than strictly necessary to restore novelty," if required to satisfy Article 84 EPC, would not automatically lead to an arbitrary reshaping of the claims and, hence, be in agreement with the spirit of G 1/03.

Practically, this means that it is possible to formulate an undisclosed disclaimer and, in order to satisfy the requirement of Article 84 EPC, deviate from the original wording of the disclosure in the conflicting prior art, even if this means that more is removed from the claims than would have been necessary.

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